UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`AGILA SPECIALTIES INC.
`and Mylan Pharmaceuticals Inc.,
`Petitioners,
`
`v.
`
`CUBIST PHARMACEUTICALS, INC.,
`Patent Owner
`
`Patent No. 8,058,238
`
`________________________
`
`Case IPR2015-00144
`________________________
`
`PETITIONER’S REPLY TO OPPOSITION TO
`MOTION TO CORRECT ACCORDED FILING DATE
`Under 37 C.F.R. §§ 1.10, 42.20 and 42.22
`
`
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`AGILA SPECIALTIES INC.
`and Mylan Pharmaceuticals Inc.,
`Petitioners,
`
`v.
`
`CUBIST PHARMACEUTICALS, INC.,
`Patent Owner
`
`Patent No. 8,058,238
`
`________________________
`
`Case IPR2015-00144
`________________________
`
`PETITIONER’S REPLY TO OPPOSITION TO
`MOTION TO CORRECT ACCORDED FILING DATE
`Under 37 C.F.R. §§ 1.10, 42.20 and 42.22
`
`
`
`i
`TABLE OF AUTHORITIES
`
`CASES
`Gerritsen v. Shirai, 979 F.2d 1524 (Fed. Cir. 1992) .................................................3
`
`SAP America, Inc., v. Arunachalam, IPR2013-00194, Paper 72
`(PTAB 2014) ...............................................................................................2, 3
`
`STATUTES
`
`35 U.S.C. §2(b)(2)(B) ................................................................................................2
`
`35 U.S.C. §312...........................................................................................................1
`
`44 U.S.C. §1507.........................................................................................................2
`
`5 U.S.C. §552(a)(1)....................................................................................................2
`
`OTHER AUTHORITIES
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (2012) ...............................2
`
`RULES
`
`37 C.F.R. §42.106 ......................................................................................................1
`
`37 C.F.R. §42.20(b) ...................................................................................................2
`
`37 C.F.R. §42.6 ......................................................................................................1, 3
`
`REPLY TO CORRECT ACCORDED FILING DATE
`
`
`
`1
`On pages 1-2 of the opposition, Patent Owner (“Cubist”) argues that the
`
`petitioner (“Agila”) failed to satisfy the non-waivable statutory requirements for
`
`filing a petition for inter partes review. The statutory requirements for a petition
`
`are set in 35 U.S.C. §312. The statute does not set a mode for filing a petition,
`
`much less any procedure to follow for alternative filing.
`
`The statute requires that “the petition provide[] such other information as the
`
`Director may require by regulation” and that such information be served on the
`
`patent owner. §312(a)(4) & (a)(5). The rule on inter partes review petition content
`
`is 37 C.F.R. §42.106, which incorporates 37 C.F.R. §42.6 by reference.
`
`Section 42.6(b)(2)(i)(A) states that “A document filed by means other than
`
`electronic filing must…[b]e accompanied by a motion requesting acceptance of the
`
`submission[.]” The plain meaning of the rule is that the motion is not part of the
`
`document in question because the motion accompanies that document. While the
`
`Director could have required that the motion be part of the document, the plain
`
`language of the rule imposes no such requirement. In short, Agila did not fail to
`
`meet a statutory requirement for filing the petition itself.
`
`On pages 2-3, Cubist advises that Agila, in turning to an alternative mode of
`
`filing after experiencing electronic filing difficulties, failed to serve the
`
`accompanying motion on Cubist. Agila regrets the error and acknowledges that
`
`consideration of the motion would require Board action to permit late service.
`
`REPLY TO CORRECT ACCORDED FILING DATE
`
`
`
`2
`Agila notes, however, that Cubist did not point to any actual prejudice arising from
`
`the late service and further notes that any possible prejudice was rendered moot
`
`when the Board authorized the present motion, which was properly served.
`
`On pages 3-4, Cubist argues that Agila should have tried filing by email
`
`before filing in paper, relying on a web posting for authority. Ex. 1003. The rules
`
`do not state an email-first requirement. It is the rules, not a web page, that govern.
`
`35 U.S.C. §2(b)(2)(B) (requiring notice and comment rule making); 44 U.S.C.
`
`§1507 (according constructive notice for properly published rules); 5 U.S.C.
`
`§552(a)(1) (voiding the effect of a requirement not so published). Agila notes that
`
`the Practice Guide also states no such requirement. 77 Fed. Reg. 48756, 48758
`
`(2012). Again, the Director during the rule making period could have created a
`
`different process, but did not do so.
`
`In any case, the web-notice requirement is
`
`Board-created and thus waivable. Cubist has cited no prejudice from the paper
`
`filing. Any prejudice to the Board was removed when Agila uploaded all
`
`documents. Cf. SAP America, Inc., v. Arunachalam, IPR2013-00194, Paper 72 at
`
`5 (PTAB 2014) (imposing paper filing as a sanction). There is no possible
`
`prejudice to the Board, Cubist or the public.
`
`On page 5, Cubist argues that the accompanying motion was improper
`
`because the Board had not authorized it in advance. The Board rule requires prior
`
`authorization, but does not require the authorization to be in an order. §42.20(b).
`
`REPLY TO CORRECT ACCORDED FILING DATE
`
`
`
`3
`In this case, the prior authorization was provided in another rule: §42.6(b)(2)(i)(A).
`
`In any case, again, Cubist has identified no cognizable prejudice.
`
`On page 8, Cubist argues that it is prejudiced, but the prejudice it
`
`identifies— having to defend its claims in an inter partes review— is not a legally
`
`cognizable prejudice, a point made in the motion and not rebutted by Cubist. By
`
`contrast, the prejudice to Agila is considerable if its efforts are frustrated by
`
`enforcement of technical requirements apart from the merits when there is no
`
`prejudice. This is not a case where a party has made an ongoing series of mistakes,
`
`warranting some sanction. See, e.g., SAP America at 4. Agila did everything
`
`possible to file the petition within the rules given the compatibility issue with
`
`PRPS. Moreover, even if some Board response were appropriate, dismissal of the
`
`proceeding would be wholly disproportionate. Gerritsen v. Shirai, 979 F.2d 1524,
`
`1527-28 (Fed. Cir. 1992) (vacating default judgment for abuse of discretion).
`
`On page 8, Cubist misapprehends the prejudice to the public. Inter partes
`
`review was established as a mechanism for providing inexpensive patentability
`
`review on the merits in an expert forum as an alternative to burdening the district
`
`courts. Pushing this contest back into a district court for a minor, non-prejudicial,
`
`waivable technicality rather than proceeding to a decision on the merits cannot be
`
`reconciled to the interests of justice or a concern for the public good.
`
`Under any standard, correction of the accorded filing date should be granted.
`
`REPLY TO CORRECT ACCORDED FILING DATE
`
`
`
`Dated: December 17, 2014
`
`4
`Respectfully submitted,
`
`/Peter R. Munson/
`Peter R. Munson
`Lead Attorney for Petitioners,
`Agila Specialties Inc. and Mylan
`Pharmaceuticals Inc.
`
`REPLY TO CORRECT ACCORDED FILING DATE
`
`
`
`5
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, I certify that I caused to be
`
`served a true and correct copy of Petitioner’s Reply to the Opposition to the
`
`Motion to Correct Accorded Filing Date by electronic mail, on the patent owner
`
`at the correspondence address of record for the subject patent as follows:
`
`William DeVaul: William.DeVaul@cubist.com
`Henry Gu: Henry.Gu@cubist.com
`
`Dated: December 17, 2014
`
`/Lorelei P. Westin/
`Lorelei P. Westin
`Reg. No. 52, 353
`
`Wilson Sonsini Goodrich & Rosati PC
`12235 El Camino Real, Suite 200
`San Diego, CA 92130-3002
`Tel.: (858) 350-2225
`Facsimile: (858) 350-2399
`E-mail:
`
`REPLY TO CORRECT ACCORDED FILING DATE
`
`
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